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#Trademark on top: The buyer of Pornhub.co just lost $72k via the #UDRP process

ZFBot

Pornhub is one of the biggest destinations of adult content on the Internet, and they have trademarked their brand, operating from the matching .com domain.

In 2010, the domain Pornhub.co was registered, and the domain apparently changed hands in 2018. In the ensuing UDRP at the National Arbitration Forum, the Estonian Respondent stated that they bought the domain for $72,800 dollars.

They also claimed that its use does not compete with the Complainant’s mark – which is practically impossible. The panelist stated:

“Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pornhub.co> domain name is both substantively identical and confusingly similar to Complainant’s PORNHUB mark.

The domain name incorporates the mark in its entirety, with only the addition of the country-code Top-Level Domain (“ccTLD”) “.co,” the country code for Columbia.  This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy.  See, for example, Reese v. Morgan, FA 917029 (Forum April 5, 2007) (finding that the mere addition of the generic top-level domain “.com” to the mark of another in creating a domain name was insufficient to distinguish the resulting domain name from that mark).  This is because every domain name requires a ccTLD or other TLD.”

The country is of course Colombia, not Columbia. Final decision: transfer the domain Pornhub.co to the Complainant. Full details follow:

Pornhub.CO was lost via the UDRP process – Photo by Alex Azabache on Unsplash

Licensing IP International S.à.r.l. v. Priit Eiber

Claim Number: FA1912001873821

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Priit Eiber (“Respondent”), Estonia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pornhub.co>, registered with NameCheap, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.

On December 5, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornhub.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pornhub.co. Also on January 15, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Thereafter, a Response was received and determined to be complete on February 4, 2020.

On January 6, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a major participant in the online adult entertainment market.

Complainant has common law rights in the PORNHUB mark through its continuous use in commerce running from March 11, 2007.

Complainant holds a registration for the PORNHUB service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,220,491 registered October 9, 2012.

Respondent acquired and registered the domain name <pornhub.co> on or about October 21, 2018.

The domain name is both substantively identical and confusingly similar to Complainant’s PORNHUB mark.

Respondent has not been commonly known by the domain name.

Respondent is not authorized to use Complainant’s PORNHUB mark.

Respondent has not been commonly known by the domain name.

Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Instead, Respondent resolves the domain name resolves to a webpage which invites Internet users to play an online adult entertainment game and which then directs users to websites that compete with the business of Complainant by offering online adult entertainment.

Respondent profits from this use of the domain name.

Respondent lacks rights to or legitimate interests in the domain name.

Respondent uses a privacy service to conceal its identity.

Respondent knew of Complainant’s rights in the PORNHUB mark prior to its acquisition and registration of the domain name.

Respondent registered and uses the <pornhub.co> domain name in bad faith.

B. Respondent

Respondent bought the domain name for $72,800.

The creation of the domain name by its initial registration on September 3, 2010, predates Complainant’s USPTO trademark registration by more than two years.

Respondent doesn’t use the PORNHUB mark in any way on the website resolving from the domain name.

The adult gaming content displayed on the resolving webpage does not compete with that of Complainant.

Respondent’s use of the domain name does not disrupt Complainant’s business.

Complainant has not made complaints about a number of similar domain names.

Respondent does not use the domain name in bad faith.

FINDINGS

(1) the domain name registered by Respondent is identical and confusingly similar to a service mark in which Complainant has rights; and

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used by Respondent in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant claims rights under the common law in the PORNHUB mark sufficient to satisfy the standing requirements of Policy ¶ 4(a)(i) through its continuous use of the mark in commerce from a date early in 2007. Common law rights in a mark can meet the test of Policy ¶ 4(a)(i) and may be established through a showing of “secondary meaning,” by which is meant a demonstrated association in the minds of participants in the relevant marketplace linking a product or service sold under a mark and a specific mark holder as its source. See, for example, Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that a UDRP complainant had established its common law rights in a mark adequate for purposes of Policy ¶ 4(a)(i) with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant has provided blog posts, media articles, and the Google Trends report to demonstrate secondary meaning in the PORNHUB mark. However, Complainant’s showing is not sufficient to make out its claim of common law rights in the mark, in part because too much of its proof of secondary meaning is too recent in time.

Complainant can still supply evidence of rights in its PORNHUB mark satisfactory for purposes of Policy ¶ 4(a)(i) by reference to registration of the mark with a national trademark authority. Complainant has offered proof of registration of the mark with the USPTO, but Respondent objects that Complainant’s mark registration, which dates from October 9, 2012, cannot overcome the earlier date of creation of the domain name, September 3, 2010, so that the domain name registration has time priority, and therefore superior rights, over those of the mark registration. Complainant counters that Respondent cannot rely on the original date of the domain name’s registration because UDRP panels have determined that the pertinent date for purposes of such a comparison is the date of Respondent’s more recent acquisition and registration of the domain name, which Complainant sets at October 21, 2018, years after Complainant’s mark was registered.

We conclude that Complainant is correct that UDRP panels have come to consensus on the point that the determinative date for a comparison of the rights of a mark holder versus those of a domain name registrant is the date on which the registrant/respondent acquired its domain name, no matter when the domain name was originally created in the hands of an earlier registrant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, sec. 3.9. and cases cited therein. For this reason, Complainant’s claim of rights in the PORNHUB mark by registration satisfies the standing requirements of Policy ¶ 4(a)(i).

This conclusion holds notwithstanding that Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Estonia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):

[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pornhub.co> domain name is both substantively identical and confusingly similar to Complainant’s PORNHUB mark.

The domain name incorporates the mark in its entirety, with only the addition of the country-code Top-Level Domain (“ccTLD”) “.co,” the country code for Columbia. This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Reese v. Morgan, FA 917029 (Forum April 5, 2007) (finding that the mere addition of the generic top-level domain “.com” to the mark of another in creating a domain name was insufficient to distinguish the resulting domain name from that mark). This is because every domain name requires a ccTLD or other TLD.

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <pornhub.co> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):

Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent answers that it doesn’t use the PORNHUB mark in any way on the website resolving from the domain name, and that the adult gaming content displayed on the resolving webpage does not compete with that of Complainant. In light of the conflict in the positions taken by the parties, we must examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the disputed <pornhub.co> domain name, and that Complainant has not authorized Respondent to use the PORNHUB mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Priit Eiber,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).

Complainant next asserts that Respondent fails to use the <pornhub.co> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the domain name resolves to a page inviting Internet users to play an online adult entertainment game, then directs them to another website that offers adult entertainment content in competition with the business of Complainant. Complainant also contends that Respondent profits from this use of the domain name.

Respondent disputes some of Complainant’s contentions, but not that it profits from its employment of the domain name. Moreover, Respondent’s seeming denial of Complainant’s allegations has the appearance of a calculated exercise in obfuscation. Respondent says that it doesn’t use the PORNHUB mark in any way on the website resolving from the domain name, but it does not deny that the mark makes up the entire substantive content of the domain name. Respondent also says that the adult gaming content displayed on the resolving webpage does not compete with that of Complainant, but it does not deny that it displays on that web page adult entertainment content, which subject matter is at the core of Complainant’s business. As a consequence, we are compelled to the conclusion that Respondent’s use of the domain name is neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR, FA 1647718 (Forum January 4, 2016) (finding that a disputed domain name offered for sale goods and services overlapping those marketed by a UDRP complainant, so that that respondent did not have rights to or legitimate interests in the domain name as provided in Policy ¶¶ 4(c)(i)-(iii)).

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

We are persuaded by the evidence that Respondent’s use of the <pornhub.co> domain name, which we have found to be both substantively identical and confusingly similar to Complainant’s PORNHUB service mark, represents an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1612750 (Forum May 13, 2015):

The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).

The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

Accordingly, it is Ordered that the <pornhub.co> domain name be forthwith TRANSFERRED from Respondent to Complainant.

Terry F. Peppard, Panelist

Dated: February 10, 2020


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